$~43(original side)

* IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 23^rd January 2023 Pronounced on: 30^th January 2023 + CS(COMM) 604/2021 & I.A. 15428/2021, I.A. 5025/2022, I.A.

5026/2022, I.A. 5027/2022 JINDAL STAINLESS (HISAR) LTD. ..... Plaintiff Through: Mr. Rajshekhar Rao, Sr. Adv. with Mr. Sarad Kumar S., Mr. Rohan Dua and Ms. Kanchal Zikmani, Advs.

versus SUNCITY SHEETS PRIVATE LIMITED AND ANR.

..... Defendants Through: Mr. J. Sai Deepak, Mr. Abhishek A., Mr. Manish Rastogi and Mr.

Kishore Kunal, Advs. for D-1 & D-2 CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

J U D G M E N T

% 30.01.2023 I.A. 5027/2022

1. This judgment disposes of the present application, under Order I Rule 10 of the Code of Civil Procedure, 1908 (CPC), filed by Jindal Industries Pvt. Ltd. (JIPL) seeking to be impleaded as Plaintiff 2 in the present suit in which, as of now, Jindal Stainless (Hisar) Ltd.

(occasionally referred to, hereinafter, as ―JSHL‖) is the sole plaintiff.

2. I have heard Mr. Rajshekhar Rao, learned Senior Counsel for the plaintiff and Mr. J. Sai Deepak, learned Counsel for the CS(COMM) 604/2021 Page 1 of 33 Signature Not Verified Digitally Signed defendants, at length on the application.

The plaint

3. The plaintiff alleges that the mark of the defendants infringes the , , and trade marks, in which the plaintiff holds valid and subsisting registrations in various classes.

4. The impugned mark of the defendants is clearly not identical to the registered trade marks of the plaintiff. The plaint, however, alleges that the very use of the word ―JINDAL‖, by the defendants, infringes each of the plaintiff‘s registered trade marks. The plaint further alleges that the defendants are seeking, by use of their mark, to pass off their products as the products of the plaintiffs. Predicated on these allegations, the plaint seeks a decree of permanent injunction, restraining the defendants and all others acting on their behalf from using the mark or the word ―JINDAL‖ in any form. Additionally, the suit also prays for delivery-up, rendition of accounts, damages and costs.

5. IA 15428/2021 was also filed by the plaintiff with the suit, seeking interlocutory injunctive reliefs.

6. When the matter came up for preliminary hearing before this Court on 26^th November 2021, I expressed a tentative view that, given CS(COMM) 604/2021 Page 2 of 33 Signature Not Verified Digitally Signed the anti-dissection principle contained in Section 17¹ of the Trademarks Act, 1999, the fact that the plaintiff did not have any word mark registration for JINDAL and the other features which distinguished the composite device marks of the defendants from the registered trade marks of the plaintiff, it was difficult, at an ad interim stage, to hold that the impugned mark of the defendants was deceptively similar to the plaintiff‘s registered trademarks.

7. Following this, on 1^st December 2021, learned Counsel for the plaintiff submitted that the plaintiff would be satisfied if the prayer for interim injunction was taken up after a reply was filed by the defendants to the plaintiff‘s application under Order XXXIX Rules 1 and 2, CPC.

8. Further orders have been passed in the present proceedings, to which it is not necessary to allude.

The present application

9. JIPL seeks, by means of the present application, to be added as Plaintiff 2 in the suit.

1 17. Effect of registration of parts of a mark. –

(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark—

(a) contains any part –

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-

distinctive character, the registration thereof shall not confer any exclusive